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Wednesday, 8 February 2017

The post below follows on from Part
1 of this post regarding Ms Mulhern, owner of the mark The Willow Tea Rooms opposing the Willow Tea Rooms Trust attempt to
register the mark “The Willow Tea Rooms” in classes 35, 41, 42 and 43. The matter came before Mrs J Pike on the 27 January 2017 and
the UK Intellectual Property Office (IPO) published the full 73 page decision here,
in which two interesting points arose:

Use of a modified / part of a trademark registered in a
series

Firstly, Ms Mulhern opposed the registration under sections
5(2)(b) of the Trade Mark Act 1994 (TMA) [similar to an
earlier mark and is registered for identical or similar goods or services] and
5(3) TMA [is identical with or similar to an earlier
trade mark, and the earlier trade mark has a reputation, and the use of the
later mark without due cause would take unfair advantage of, or be detrimental
to, the distinctive character or the repute of the earlier trade mark]. She
based these claims on her registered trade marks for Willow (1276805,
series of two marks in Class 42: Restaurant, tea room, catering and cafe
services; all included in Class 42; but not including any of the aforesaid
services relating to the provision of alcoholic drinks) and The Willow Team
Rooms (2251332A, series of 8 marks, goods and services in classes 9, 11,
16, 20, 21, 24, 30 and 43).

In their counterstatement, the Trust denied all of the
grounds and relied on 6A of the TMA requiring Mulhern to demonstrate genuine
use of her marks. In particular, it questions whether there had been use of any or
all of the stylised forms of the mark and argued that no use had been made of the trade mark “Willow,”
since it is only used in conjunction with the overall words “The Willow Tea
Rooms” (which is a separate trade mark).

Pike noted [at 34] that there was no evidence of use of the “Willow”
mark by itself. The difference in the
second series of marks is the additional of the words ‘tea’ and ‘rooms’. She also
noted [at 50] that in Comic Enterprises
Ltd v. Twentieth Century Fox Film Corporation, Kitchin LJ stated [at 66]: “An
application for the registration of a series of trade marks is an application
to register a bundle of trade marks under a single reference number. Each of
the marks in the series must satisfy the requirements of the 1994 Act…namely
a bundle of different marks, albeit now registered under the same reference
number” (emphasis added).

With that in mind, Pike set out [at 51] to assess whether
there was use in respect of any or all of the marks registered as a series of
eight. To do this, she considered [at 52] the test to be: what sign
was presented as the trade mark on the goods and whether that sign differs from
the registered trade mark in elements which do not alter the latter’s
distinctive character (referring to Nirvana Trade Mark, BL O/262/06 at 33 and
34). For example in Hypen GmbH v EU IPO, Case T-146/15 the General Court held
that, taking into account the intrinsic qualities
and the greater or lesser degree of distinctive character of the mark, a circle around the mark in question was not sufficient to alter the distinctive
character of the mark.

Lets look at it this way....

As such, the relative distinctiveness of the registered mark
and the components added to (or omitted from) it in use are relevant factors to
take into account. Pike stated [at 57] that the
distinctive character of the "Willow Tea Rooms" mark lies firstly in the words, and secondly in
their stylisation. As the goods are sold within the tea rooms as
merchandise, it is a reasonable assumption that the way in which the mark
appears on the goods replicates the form of use in relation to the services. Therefore,
even if the mark used was only “Willow Tea Rooms”, the stylisation of the words
in the marks registered is not sufficiently distinctive that its absence from
the used mark alters its distinctive character, since in this case the distinctive character of the mark is overwhelmingly
concentrated in the words.

[So it seems to me that Pike went
around the problem of the non-use of “Willow” by establishing use of “The
Willow Tea Rooms” and then extracted the word “Willow” from the second series
to justify the registration of the first? Interesting.]

Good will of the building or the business within the
building?

So on to the second point of interest: As explained in Part
1, the building on Sauchiehall Street, was designed by Scottish architect Charles Rennie
Mackintosh in 1903 with Kate Cranston as a
tea room, which Anne Mulhern restored to its original purpose in 1983.

Ms Mulhern also opposed the Trust’s mark under 5(4)(a) TMA
1994 arguing that its use would constitute passing off by misrepresentation and
damage to her goodwill. The Trust, however, argued that the goodwill was theirs
as the owners of the building, since the name The Willow Tea Rooms was
associated with the historical development of the building itself and not the
business carried on within it. Pike recalled [at 86] the concept of goodwill in Inland
Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217, where Lord
Lindley said: “Goodwill regarded as property has no meaning except in
connection with some trade, business, or calling… In this wide sense, goodwill
is inseparable from the business to which it adds value.” It therefore
concluded [at 87] that goodwill is generated by trade or custom, and is
capable of being owned. She believed that whilst the building might have a
reputation amongst those who know of its heritage, that is different to
goodwill. [note to self and legal dictionaries (e.g. here, here, here, here), goodwill is not
reputation.]

Pike turns to Professor Christopher Wadlow, in The Law of
Passing-Off: Unfair Competition by Misrepresentation, 5th Edition, to explain
the difference between goodwill and reputation: “Goodwill as a form of legal
property is also to be distinguished from mere reputation, which is primarily a
matter of fact. In so far as reputation may be a legally protected interest, it
is a non-proprietary one. It is true that the two are very closely related, and
a business with goodwill (at least in the sense in which the term is used in
passing-off) can hardly fail to have a reputation in some sense. The converse,
however, is not true, and the existence of a reputation associated with a
person, product, name or mark does not necessarily imply the existence of
goodwill.”

So, reputation can exist without a supporting business, but
goodwill can only exist via business or trade. Thus, Pike states [at 89] that a
building per se cannot have goodwill because goodwill can only exist if there
is something to buy in order to generate custom. As such, the Trust could not
establish goodwill on the basis of the architectural reputation of the building
[92]. Consequently, the Trust was prevented from registering the mark under the
law of passing-off.

Ms Mulhern successfully opposed approximately two-thirds of
the application and was entitled to a contribution towards her costs. The
Willow Tea Rooms Trust has 28 days to appeal against the ruling but as
mentioned in Part 1, a spokesman for the Trust reportedly
said that it accepts the decision.

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